Proprietor of a Trade Mark can’t enjoy monopoly, merely because the goods come under the same class.
The Apex Court has set aside the orders of High Court and also of the IPAB by upholding the registration made by the Registrar of Trade Mark in the case of Nandhini Deluxe vs. Karnataka Co-operative Milk Producers Federation Limited. In this case The Apex Court held that the proprietor cannot enjoy monopoly over the entire class of goods. Further, when he is not using the trade mark for certain goods falling under the same class, he cannot claim monopoly.
The Supreme Court observed in the case that “Though there is a phonetic similarity insofar as the words NANDHINI / NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the appellant has written NANDHINI as its mark is totally different from the style adopted by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the appellant’s mark with that of the respondent when these marks are seen in totality”.
The court further observed: “The reasoning of the High Court that the goods belonging to the appellant and the respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the appellant to have the registration of the concerned Trade Mark in its favor, would be meaningless. That apart, there is no such principle of law”
Referring to Vishnudas Trading of Vishnudas Kushandas, the bench observed: The Proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said Trade Mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of the section do not cover the same class of goods.
Dr. Gubbi. S. Subba Rao
Counselor & Advocate